James Tumbridge

Partner, Barrister

James is an Intellectual Property Litigation partner in our legal services team. He has extensive experience in commercial litigation, intellectual property and alternative dispute resolution (ADR). His practice has covered a wide variety of matters including; commercial litigation, admiralty, employment, insolvency, banking, pensions, and mortgage claims. He focuses on intellectual property disputes; and has been involved in cases such as the Supreme Court decision in R. v. Prudential on the issue of whether legal professional privilege applies to non-lawyers representing the interests of the IP community, the House of Lords decision in RPR v Yeda concerning patent entitlement to a cancer therapy, CCH v the Law Society of Upper Canada a decision of the Canadian Supreme Court concerning copyright in judgments, trade mark cases such as the Enterprise Court decision protecting the Dyno-Rod mark from rogue plumbers, as well as design and confidential information disputes in the High Court.

James’ work also extends to anti bribery compliance, data protection matters; compliance for politicians and political campaigns, advertising and promotions, as well as issues with data capture for those dealing in virtual currency and customer data.  He has been an ad hoc advisor to various UK MPs and MEPs on a range of IP and dispute issues. Through his engagement with policy makers he has extensive Government relations experience and advises clients on how to prepare for legislative changes and regulation compliance.

James is also a qualified mediator, listed with the world intellectual property organisation (WIPO), the United Kingdom Intellectual Property Office, ADR Group, IDRS, Talk Mediation, Clerksroom and a number of other ADR providers.  He also spent two years chairing the International Trade Mark Association’s ADR committee.

James has truly global experience appearing as an advocate in courts in the USA, Canada and the Falkland Islands, he has also worked on disputes in Gibraltar, the Isle of Man, Germany, France, Austria and Spain.

James’ writing has been featured in numerous publications inter alia; International Company and Commercial Law Review, Commercial Litigation Review, World Intellectual Property Report, EIPR, AIPPI, Canadian Intellectual Property Journal, ABA IPL Section, BioScience Law Review, the Law Society of Upper Canada Intellectual Property Law Year Review, Oxford Journal of IP Law & Practice, and in the Federated Press Federal Intellectual Property Review Journal. He is also the author of a book on qualification: Tumbridge's Guide to Legal Qualification: The Common Law World.

Representative Matters

  • Icescape v Ice-World International BV et al [2017] EWHC 42 (Pat) – A decision concerning threats and the defence under section 70 of the Patent Act, as well as a validity challenge on the grounds of priority, raising questions of the role of what the skilled person is taken to know, including common general knowledge, in the determination of whether a claim is entitled to priority.
  • Metropolitan Police v Smith, Blockchain Limited & Oths - 2016 unreported Old Bailey - Decision on data access, and the limits of jurisdiction where data is beyond the seas under control of a sister company.
  • GSI v Falkland Islands Goverment - SC/CIV/05/14 Supreme Court - A copyright claim concerning seismic data and licences for exploration.
  • Micromine v Alhambra & Komarnicki – 2015/16 – a series of decisions of the London County Court, and the Albertan Queen’s Bench – Cross-border enforcement of a guarantee for breach of a software licence.
  • DEK v Alent Plc – 2014 – unreported IPEC case – Extent of power of IPEC to hear cases with declarations that concern IP but where the case’s centre is contractual.
  • Arsenal FC v Reed [2014] EWHC 781 (Ch) – Construction of a court order and the right of a party to change their behaviours after a passage of time.
  • Credit Suisse v Arabian Aircraft & Equipment Leasing Co [2013] EWCA Civ 1169 on appeal from EC (2013) – LTL QBD (Comm) (Judge Mackie QC) 24/04/2013  2013 EWHC 1094 (comm) – summary judgment application concerning aircraft finance and lease back agreement, considering analogous nature of leases and mortgages, the Court of Appeal confirmed the claimant could not change their case based on a skeleton argument in the absence of first amending their pleadings.
  • Dyno Holdings & Dyno-Rod Limited v Dial A Rod Homecover Limited et al – [2013] EWPCC 8 – invalidation and revocation of trade marks on the basis of bad faith registration and misleading the public
  • R (on application of Prudential plc and anor) v Special Commissioner of Income Tax – [2013] UKSC 1 – UK Supreme Court ruling on the extent of Legal Advice Privilege that may be claimed by non-lawyers
  • Fage v Chobani – [2012] EWHC 3755 (Ch); [2012] EWHC 3097 (Ch); [2013] EWHC 298 (Ch); [2013] EWHC 630 (Ch); [2013] E.T.M.R. 28; [2013] F.S.R. 32; (2013) 157(14) S.J.L.B. 31; [2014] EWCA Civ 5; –  the ‘Greek Yoghurt’ extended passing off case, including permissions for surveys, the approach to proper disclosure and interim injunctions.
  • Titus v Bolden James – [2011] EWCA Civ 993 – emergency injunction to restrain software release for breach of confidential information, High Court to Court of Appeal in one day. Changed the law on equitable relief on foreign claims
  • Select Healthcare Limited v Cromptons Healthcare Limited – [2011] EWHC 1830 (Pat), [2011] EWHC 796 & 797 (Pat)) – patent infringement & validity matter, also addressing requirements of statements of case and permissions of experiments as well as ADR.
  • Gham & Anor. v First Dragon Limited – Queens Bench, December 10th 2010, (unreported) decision of Master Moncaster on the test for transfer from the High Court to the Patents County Court.
  • Philip Morris Products S.A. v. Malboro Canada Limited – [2010] FC 1099 – trade mark dispute concerning a split brand ownership and the right of one trade mark holder to prevent another from using a different and valid trade mark on the grounds of confusion - advice on English law relating to concurrent ownership, use and confusion
  • Bridgeview Manufacturing et al. v. Duratech et al., [2010] FCA 188 (FCA) – patent validity matter – expert evidence advice on English law provided regarding patent validity.
  • Croll v Radford et al – Chancery Division 2009 & 2010 – (unreported) Decisions of Master Teverson – penalising in costs parties who agreed then repudiated to mediate in a probate matter.
  • Bank of New York v Montana [2008] EWHC 1594 (Ch) – Construction of contracts in relation to a Special Investment Vehicle.
  • Mobil Cerro Negro Ltd. v. Petroleos De Venezuela SA [2008] EWHC 532 (Comm) - Variation to a World Wide Freezing Order.
  • Rhône-Poulenc Rorer International Holdings Inc and another v Yeda Research and Development Co Ltd [2006] EWHC 160 (Ch), [2006] EWCA Civ 1094, [2007] RPC 9 [2007] UKHL 43 - Patent Entitlement and the proper construction of pleadings and limitation in relation to such claims.
  • Nokia v InterDigital Corporation [2004] EWHC 2920 (Pat) and [2005] EWCA Civ 614 - Patent validity and power of the Court to declare patents essential to standards.
  • CCH Canadian Ltd. v Law Society of Upper Canada [2004] SCC 13. - Supreme Court of Canada - Copyright decision regarding fair dealing and original works in law reports.
  • Evans v Malley Organisation Ltd (CA) [2003] IRLR 156; [2002] EWCA Civ 1834 - Employment and the proper calculation for rates of pay.
  • Scancom International A/S v RWH Enterprises Ltd [2003] All ER (D) 89 - Sale of Goods, entitlement to repudiate contract based on performance and whether goods sold by sample or description.
  • Lloyds TSB Bank plc v Hayward (CA) [2002] EWCA 1813 [12 December 2002] LTL 12/12/02 - Liability for a guarantee when agreement varied unilaterally.
  • Wasserman Arsenault Ltd. v Sone [2002] OJ No. 1221 & 3772, (2002) 157 OAC 183, 33 CBR 145 Ontario Court of Appeal - Rights of trustees to fees in bankruptcy cases.

Affiliations

  • American Bar Association (ABA)
  • International Association for the Protection of Intellectual Property (AIPPI), UK Council Member
  • International Bar Association (IBA), ADR Committee Member
  • Intellectual Property Owners Association (IPO)
  • UNION of European Patent Attorneys
  • International Trade Mark Association (INTA), Committee Member
  • The Intellectual Property Lawyers’ Organisation (TIPLO)
  • Member of the Chartered Institute of Arbitration (MCIArb.)
  • Chartered Institute of Patent Attorneys (CIPA)
  • Institute of Trade Mark Attorneys (ITMA)

Honours & Awards

  • Managing Intellectual Property, IP Stars - ranked in Trade Marks and Patents, 2017
  • Legal 500 UK, Intellectual Property
  • Chambers Global, Dispute Resolution – UK & Canada, Intellectual Property
  • IAM Patent 1000, The World's Leading Patent Practitioners
  • WTR Trademark 1000 The World's Leading Trade Mark Practitioners
  • Chambers UK, Dispute Resolution and Mediation
  • Chambers UK, Intellectual Property
  • AI Intellectual Property Awards - Most Innovative IP Disputes Firm & Best Full Service IP Firm – UK 2015
  • UK Litigation Lawyer of 2013 and 2014 - ILO Client Choice Awards
  • UK Litigation Lawyer of 2013 - ACG & FT
  • Member of the INTA Panel of Trade Mark Mediators
  • Recommended by the International Mediation Institute
  • Harold Fox Scholarship
  • Hardwicke Scholarship to Lincoln’s Inn
  • James Bushell Scholarship for the Bar Vocational Course
  • Lawrence Atwell Award for the Bar Vocational Course
  • Sidney Perry Award for the Bar Vocational Course
  • Young Lawyer Award from the International Association for the Protection of Intellectual Property (AIPPI)

Selected Speaking Engagements

  • Digital Copyright: Shaping New Law - Fair Dealing & New Defences - London 2017
  • Opportunities for UK Life Sciences following Brexit - OBN BioTrinity London 2017
  • Trans-Atlantic Data Post Brexit - Toronto 2016
  • 3D Printing: What will tomorrow bring? London 2015
  • UPC: The future of litigation in Europe, California 2015
  • Internet Disclosure, Invalidity and Infringement, UNION meeting Berlin 2014
  • IP issues in China, presentation to the Anglo-Chinese All Parliamentary Group, Parliament, London 2014
  • IP Leadership Forum, presenting on the Unified Patent Court, New Delhi, India 2014
  • Colloquium on Privilege – FICPI AIPPI AIPLA, Paris 2013
  • Fordham International IP Conference on European Patent Reform, NY 2012
  • IPIC Conference on Litigation Reform and IP disputes 2010
  • IPIC Conference on both Mediation and IP disputes 2009
  • World Summit of Corporate Counsel on ADR 2009
  • East Anglian Mediation Seminar of CEDR, Cordex and Talk 2008 & 2009
  • IT and E-Commerce Update Conference 2008
  • Speaker and Session Co-chair Commonwealth Conference 2007
  • American Bar Association IPL 2004